June 11, 2009

$14 Million For CircuitCity Domain, Brand = Good Link Buy?

Aaron Wall does a great analysis of the smart play by the company that bought the CircuitCity domain and brand out of bankruptcy as the new high end link buying procedure.

The site is well ranked for many many keywords and with the recent boost of brands in the Google algorithm it could be that $14 million was a bargain that could be recouped very quickly.

Aaron does a great job dissecting the purchase and gives one ideas for gaining lift from less expensive domains that have gone into bankruptcy. I wonder if people will now start looking at bankruptcy reports instead of the expired domain lists.

Posted by Frank Watson at 5:03 PM | Permalink | Comments (1)

May 26, 2009

After Successfully Suing Google, Greenspan Settles with Facebook

When it comes to legally challenging tech giants, Aaron Greenspan is on a roll. In March, he won a small claims court suit against Google's AdSense program, which cut him off without warning and without paying him what his site had earned.

It turns out that Greenspan attended Harvard at the same time Facebook founder Mark Zuckerberg did. Greenspan developed a network for the Harvard community called houseSYSTEM. The network included course scheduler, student marketplace, email service, automatic birthday reminder, message boards, photo album, digital flyer advertising, event calendar (with online RSVP's), map integration, job placement, and local business reviews. Greenspan thought about adding profiles, but at the time nixed them for security reasons.

houseSYSTEM included a section called 'The Universal Face Book.'

Later, Zuckerberg would add profiles when he started his social network in 2004. And, of course, he called it Facebook.

Naturally, this led to trademark disputes which have now been settled.

This isn't the first time a classmate of Zuckerberg wanted credit for their Harvard-era work. ConnectU's co-founders (and twins) Cameron and Tyler Winklevoss, along with co-founder Divya Narendra sued Facebook for idea-stealing. That case was settled as well, with leaked reports purpotedly showing the settlement money in the $65 million range.

Posted by Nathania Johnson at 12:05 PM | Permalink | Comments (0)

March 16, 2009

Utah Search Bill Pulled from Senate Vote, Postponed Until 2010

The Senate sponsor of the latest Utah search bill, Curtis Bramble, pulled the it from being voted on by last Thursday's deadline, according to Clickz. After passing the House by a slim margin, the bill had to be voted on by last Thursday, which was the last day of the Utah legislature's 45 day general session this year.

Senator Bramble says the bill needs more debate and consideration. The next chance the bill will have is in 2010, when the legislature convenes again.

If passed, the law would prohibit advertisers from bidding on trademarked terms when targeting Utah consumers.

Posted by Nathania Johnson at 12:25 PM | Permalink | Comments (0)

March 9, 2009

Utah Legislature Attempts to Regulate Keywords - Again

Kate Kaye at ClickZ.com is reporting that the Utah House has passed H.B. 450, which is another law the state is considering to regulate keywords advertising. The Senate has until Thursday to pass the law, as Utah's legislature only meets 45 days a year.

Unlike past regulation attempts, this version would give immunity to the search ad providers like Google and Yahoo. Instead, the burden would be on the advertisers. Even then, advertisers would be subject to injunction and attorney's fees. In other words, advertisers wouldn't face damages under this law. (I'm sure some lawyers will try to find other nifty laws to facilitate the extraction damages.)

Additionally, this law restricts its reach to Utah only. Advertisers using geotargeting to reach Utah consumers would be affected.

The law is being lobbied for solely by 1-800 Contacts, which has a history of being a proponent of keyword regulation. The major search engines are against the bill, despite its limited scope. Related Reading: Utah Legislators Doing Research -- After They Passed the Law Utah's Misguided Trademark Protection Act Election Year Brings New Efforts to Regulate Search Engine Data Collection

Posted by Nathania Johnson at 10:48 AM | Permalink | Comments (0)

October 31, 2008

SEW Experts: Porn and Gambling: Canaries in the SEM Coal Mine?

Many advances in marketing on the Web are the result of spending by the profitable and competitive porn and gambling industries. In today's SEM Crossfire column, "Porn and Gambling: Canaries in the SEM Coal Mine?," Frank Watson and Chris Boggs explore recent lawsuits in both industries that might help us again, by pointing out some specific areas for marketers to keep an eye on.

» Full story

Posted by Kevin Newcomb at 12:00 AM | Permalink | Comments (0)

June 4, 2008

SEW Experts: Who Owns the Brand?

For a whole lot of really good reasons, brands (particularly those with resellers) maintain an ongoing battle to protect their brands. And in the online world, they want to hold search engines accountable. In today's Searching for Meaning column, "Who Owns the Brand?," Kevin Ryan notes that even if a group of advertisers did come together and pull their search advertising, all they will really accomplish is losing large amounts of directly accountable revenue by missing placements in top search sites. But Google is going to need the deep-pocketed advertisers currently being alienated by the lack of internal trademark policing. This could be a very large instance of mutual back-scratching, but the outcome will not be decided in court.

» Full story

Posted by Kevin Newcomb at 12:00 AM | Permalink | Comments (0)

April 8, 2008

Others' Trademark Terms In Meta Tags Illegal: Georgia Court Rules

The 11th Circuit Court of Georgia ruled the use of others' trademarks in meta tags infringes trademark laws, according to North American Medical Corp. v. Axiom Worldwide, Inc.

How this eventually gets applied across the country remains to be seen but it is the start of legal interpretation of search optimization. How far this can be pushed is what our industry should be thinking about right now.

If applied to the use of trademarked keywords used in Google - though there is another ruling that supported Google's method - could make things hard for non-branded companies who produce products basically known by the trademarked term like Kleenex etc.

Funny Google just launched the ability to use trademarked keywords in the UK last week.

Eric Goldman's Technology and Marketing Law blog gives some insight into the ruling.

"Unfortunately, it's hard to parse this case because the court is imprecise about which metatags were used. I've looked through the defendant's appellate brief and they don't clarify the technology for the court at all--I'm wondering if any of the attorneys involved in this case know that there are multiple types of metatags. We only have the following three facts to work with:

* Axiom included competitive trademarks in the metatags * Axiom appeared as the second organic search result in Google for the trademarked terms (following the plaintiff, which was #1 in the search results) * The trademarked terms appeared in the search results descriptions"

Since there is always the possibility Google took the description from other sources apart from the site's description the ruling seems to be potentially overruled if further challenged. As Goldman mentions the "court does not exhibit any understanding of anchor text or the fact that Google sometimes automatically assembles search result descriptions using third party content (such as DMOZ)"

This one could have major impact on all levels of search marketing, I wonder how Google plans to react to this interpretation of their actions. Funny the results in Yahoo or Microsoft were not mentioned.....

Posted by Frank Watson at 9:00 PM | Permalink

February 7, 2008

Courts Need Consensus on Trademark Law and Search

Adding more confusion to the case law surrounding trademark issues and search advertising, a Sixth Circuit federal court in Kentucky found that keyword advertising is a "trademark use in commerce" under the Lanham Act. Actually, what they decided was that there was not enough case law to prove it wasn't, so a motion to dismiss the case based on that argument could not be granted.

While the decision was not an overwhelming one, and should not affect future cases, it showcases the confusion in the courts surrounding keyword advertising, and overall search engine marketing issues. In most Circuit Courts – other than the Second Circuit courts in New York, Vermont and Connecticut – the findings have been that keyword advertising is a trademark use in commerce, as Eric Goldman, an Internet law professor at Santa Clara University School of Law, outlines on his Technology & Marketing Law Blog.

"This case reinforces the pattern that Second Circuit-controlled courts aren't finding trademark use in commerce from keyword triggering and all other courts are," he writes.

If buying an ad triggered by a trademarked keyword is eventually found to be a trademark use in commerce, that would essentially prevent advertisers from doing so legally. Goldman has written quite extensively about online trademark law, and he agrees with the Second Circuit courts.

The Lanham Act defines "use in commerce" as using a trademark on physical packaging or displays, or "in the sale and advertising of services," an ambiguous definition when it comes to the Internet and search engine marketing, says Goldman. He expects the matter to remain unresolved until Congress passes a new law or the Supreme Court makes a ruling.

Google's current trademark policy allows advertisers in the U.S. and Canada to trigger an ad from another party's trademarked keyword, but not to use the trademarked term in the ad text. In all other countries, advertisers are not allowed to do either.

Yahoo's trademark policy "requires advertisers to agree that their search terms, their listing titles and descriptions, and the content of their Web sites do not violate the trademark rights of others."

Microsoft's trademark policy is similar to Yahoo's (and Google's non-North American policy). It "requires all advertisers to agree that they will not bid on keywords, or use in the text of their advertisements, any word whose use would infringe the trademark of any third party or would otherwise be unlawful or in violation of the rights of any third party."

Posted by Kevin Newcomb at 5:50 PM | Permalink

October 18, 2007

Search and the Law: Trademarks

Since search became monetized, trademarks have been a front-and-center issue for legal debate. Today, with the proliferation of paid and organic search listings, search and trademarks have led to growing dilemmas for search engines and advertisers alike.

In a two-part SearchDay series, "Trademark Law – What Search Marketers Should Know, Part 1" and "Trademark Law – What Search Marketers Should Know, Part 2," we look at the guidelines that search marketers should be aware of, both to protect your own trademarks from unauthorized use, and to enforce trademark infringement against others.

Posted by Kevin Newcomb at 3:25 PM | Permalink

September 17, 2007

Cybersquatting defined for search marketers

Intellectual property and ecommerce attorney David Adler discusses the legal definition of cybersquatting, and the legal remedies for search marketers.

Alder explains that cybersquatting can fall into a trademark infringement issue when a competitor purchases a domain that includes the trademark in domain, or even just similar enough to be confusing to the intended audience (whereas people will mistake the domain to be from the trademark owner).

Much cybersquatting revolves around what Adler explains as a "bad faith" intent. Evidence of bad faith includes the following:

1. Registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;

2. Registration of the domain name primarily for the purpose of disrupting the business of a competitor; or…

3. Use of a domain name intentionally to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on a web site or location.

Some unscrupulous search spammers have attempted to subvert the search engine's own guidelines against using competitor trademarks in their search ads copy, by instead including it in the domain, appearing right below.

Posted by Grant Crowell at 11:52 AM | Permalink | Comments (0)

September 1, 2007

Don't Sue Over Keywords

When it comes to trademark protection, don't sue over keywords. Eric Goldman, who follows search and related tech cases closely, says "it's often irrational to bring lawsuits over keywords." Not to mention the waste of time and money, too.

Yesterday, one of the better-known cases was settled between American Blind & Wallpaper Factory and Google. American Blind wanted to prevent competitors from buying keywords which they had previously trademarked. If the case had gone to trial, then it would have been over the matter of consumer confusion.

This means there's been no U.S. based test about trademark protection for keywords, at least not yet. Google clearly states its position, in its trademark policy: "Please note that we will not disable keywords in response to a trademark complaint."

If your company owns trademarks, free and clear, then remember they won't be protected when advertisers want to buy them as paid links. However if the trademarks appear in ad copy, you have recourse. Follow the current procedures with Google or other paid search providers, to file complaints for removal.

More here: Merc News (Log In); American Blind Settlement and Background; Google's Policy

Posted by at 5:58 PM | Permalink

May 11, 2007

Search-Related Legal Updates

Santa Clara University law professor Eric Goldman, on his Technology and Marketing Law blog, has updates on several search-related laws or lawsuits this week.

1. Broad Matching Doesn't Violate Injunction – In the Rhino Sports v. Sport Court case in Arizona, the courts have gotten broad matching right for once, Goldman says. Rhino Sports agreed in 2002 to a permanent injunction from using "sport court" in commerce, and last year, Sport Court saw that Rhino Sports' ad was showing up in a search for "sport court." The judge correctly pointed out that Rhino Sports was using Google's Broad Match, and was not targeting the term "sport court," and so was not in contempt of the order.
2. Utah Trademark Protection Act Updates – It seems Utah's legislators will hold off on implementing the state's Keyword Protection Act "for at least a couple of months." That's probably the best plan, since the law is both unenforceable and would not achieve the desired results.
3. Another NY Court Says Keyword Triggering Isn't TM Use in Commerce – In the Site Pro-1 v. Better Metal case, a court has determined that keyword triggering and metatag usage isn't a trademark use in commerce, so it's ok for companies to bid on others' trademarked terms. The legal debate's not over, since other courts have ruled the other way, but this is one more vote on the side of sanity.
4. Social Networking Sites and the Law – In preparation for an undergrad event looking at laws that pertain to social networking, Goldman has put together a brief summary of the legal issues involved. Two of the biggest issues are people creating fake profiles of others, and sexual predators on social networking sites.

Posted by Kevin Newcomb at 12:09 PM | Permalink

April 29, 2007

Utah Legislators Doing Research -- After They Passed the Law

After passing a misguided Trademark Protection Act that will ban advertisers from using the trademarked terms of their competitors to target ads to Utah users, Utah legislators are now apparently talking to the companies involved and realizing they may have made a mistake.

Technology law blogger Eric Goldman points to a report from the Salt Lake Tribune:

Senior executives from Google, eBay, Microsoft, America Online, Yahoo, 1-800 Contacts and Overstock.com met with lawmakers in an impressive show of force. And while nothing was resolved during the 90-minute sit-down, lawmakers seemed to accept the inevitable. "I don't know that we'll repeal it, but we understand we've got some work to do," said Rep. David Clark, House majority leader and co-sponsor of the suddenly controversial legislation. Curtis was a little more circumspect. "It looks like an all-or-nothing proposition to me," he said.

The law is set to go into effect on Monday.

The money quote comes from Clark: "I wish we had had this interaction with industry 60 days ago," Clark said Wednesday. "We would have all been better off."

Posted by Kevin Newcomb at 11:01 PM | Permalink

April 12, 2007

Utah's Misguided Trademark Protection Act

Last week, technology law blogger Eric Goldman reported on a new law banning keyword advertising in Utah. The law bans advertisers from using the trademarked terms of their competitors to target ads to Utah users, and particularly affects search marketers.

The law appears highly likely to be overturned, according to Goldman, who wrote "I'm reasonably confident that the law ultimately will be struck down on some basis when challenged, although plenty of resources will be needlessly spent in the process. Irrespective of the legal analysis, I'd be remiss if I didn't say what we're all thinking: this law is terrible policy created by a legislature out of control."

Over at ClickZ, Kate Kaye has done some digging, and provides a fantastic run-down of the events leading up to the law's passage, the motives of Sen. Dan Eastman, who proposed it, and the current state of the similarly misguided child protection registry Utah created in 2005, as well as its Spyware Control Act of 2004. The Lobbyist, the Congressmen and the Utah Search Ad Law is definitely worth a read.

Posted by Kevin Newcomb at 1:42 PM | Permalink

January 10, 2007

Court Hands Minor Loss to Trademark Owners

In a long-running court case between exercise equipment manufacturers, a judge has determined that one company's purchase of search ad keywords containing the other's trademarks is comparative advertising, and do not dilute the other's trademark.

The case is convoluted, Santa Clara University law professor Eric Goldman explains at his Technology and Marketing Law blog. Several aspects of the case make it impossible to interpret it as a broad endorsement of bidding on competitors' trademarked keywords, he said, but it might be seen as a minor victory for marketers wishing to bid on trademarked terms.

"In theory, this is significant because trademark owners would love to be able to assert a dilution claim against keyword advertisers along with the standard trademark infringement claim. But given the court's application of the old dilution standard and the few times plaintiffs have raised dilution claims, I'm not sure if this is a critically important case on the topic," Goldman told SEW.

Posted by Kevin Newcomb at 1:04 PM | Permalink

January 9, 2007

You May Target With Trademarks

According to a recent U.S. District Court ruling, you may use trademarks when buying search ads. Just don't use the names in actual ads that consumers will see.

The Court also ruled on something that's completely passé: it's okay to insert trademarks in your meta tags which are also invisible to consumers.

The comments in TechDirt are interesting, about the value of trademarks. At what point is do brands become generic terms? Can they get diluted? Don't stores sell multiple brands together, so why's this different?

J.G. Wentworth vs. Settlement Funding was decided in the U.S. District Court of Eastern Pennsylvania. Plaintiff Wentworth says that Settlement used its trademarks "to confuse the consumers and to divert potential customers away."

However, there was no violation found of the Latham Act, which covers trademark protection. See additional interpretation by Eric Goldman. Everyone's applauding in our industry, but this is only another case (and chapter) written on the matter.

Posted by at 11:03 AM | Permalink

November 6, 2006

Google Owns AdSense.com Now

Nathan Weinberg reports that Google is now the owner of the domain adsense.com. The story goes a bit back when a company named the AdSense Consulting Group became Fed Up With Google AdSense, after receiving tons of unwanted traffic and inquiries on AdSense consulting services. They did not disclose the amount AdSense.com was sold for, but you can still visit the AdSense Consulting Group at www.adsense2.com. I wonder if Google will do the same with UTube.com, kinda similar to News.com's story that YouTube.com sued by UTube.com.

Posted by Barry Schwartz at 9:16 AM | Permalink

October 30, 2006

Buying Keywords As Trademark Use?

The London Free Press is reporting on a case in a New York Federal District Court, Rescuecom v. Google, in which the Judge granted a motion to dismiss on Google's behalf. The case involved the use of trademarked terms as keywords, finding that keyword advertising isn't a use in commerce. But, don't go looking to this ruling for any insights when it comes to the use of trademarked keywords in adwords. There are at least three reasons not to...

First, as the London paper notes, this case was between the holder of the trademark and the search engine, and not the advertiser. It's possible that the advertiser using the trademark in advertisements might not see the same result as Google.

Second, this ruling added to a number of other cases making the landscape around the use of trademarks as keywords a murky area. Eric Goldman reported on the case, and quoted part of the Court's ruling in his post:

"Defendant's internal use of plaintiff's trademark trigger sponsored links is not a use of a trademark...because there is no allegation that defendant places plaintiff's trademarks on any goods, containers, displays, or advertisements, or that its internal use is visible to the public."

Does this apply just to the search engine? We can't be certain what meaning this might have for an advertiser.

Third, a New Jersey Federal District Court, after the Rescue.com decision, held against an advertiser in denying a motion for summary judgment. Eric Goldman also wrote about this case. A snippet from the Court's decision:

First, the alleged purchase of the keyword was a commercial transaction that occurred “in commerce,” trading on the value of Plaintiff's mark. Second, Defendants' alleged use was both “in commerce” and “in connection with any goods or services” in that Plaintiff's mark was allegedly used to trigger commercial advertising which included a link to Defendants' furniture retailing website.

It appears that the New York Federal Court doesn't consider the sales of adwords including a trademark as a use in commerce, and the New Jersey Federal Court does consider the purchase of adwords including a trademark as a use in commerce. The two positions seem contradictory.

Eric Goldman's latest post cites some other cases that cloud the issue even further.

Posted by Bill Slawski at 10:22 AM | Permalink

October 26, 2006

Googling Google And Searching Yahoo

There is a strange feeling of deja vue with the Official Google blog entry 'Do you "Google"?' as we're once again looking at the way in which the word can be used. This last arose back in August over the apparent mis-use of the term by the Washington Post.

Apparently we're allowed to say "I googled him on the well-known website Google.com and he seems pretty interesting." since it's clear that I'm using the term in conjunction with the website, but I can't say "I googled him on Yahoo and he seems pretty interesting." Very bad apparently.

Does anyone but the lawyers care? Probably not, and even the Google Blog team appear less than interested given that their sign off comment on this one is "Thanks for your attention, and we look forward to serving your search-related information needs again soon."

Posted by Phil Bradley at 8:11 AM | Permalink

October 5, 2006

Google Won Keyword Trademark Lawsuit: Rescuecom v. Google

MercuryNews.com reported last week that Google won a major sponsored keyword trademark case against Rescuecom. Judge Norman Mordue of U.S. District Court, northern district of New York, went "against all four precedent rulings" on this case, said Eric Goldman. Specifically, the court said, "Defendant's internal use of plaintiff's trademark trigger sponsored links is not a use of a trademark...because there is no allegation that defendant places plaintiff's trademarks on any goods, containers, displays, or advertisements, or that its internal use is visible to the public." Eric Goldman explained that the court used the 1-800 Contacts precedent in this case to reject pretty much all of Rescuecom's claims. Bottom line is that this is a major win for Google and can be used in future cases as a precedent to those cases.

Postscript Barry: Here is a link to the court document as a PDF.

Posted by Barry Schwartz at 10:32 AM | Permalink

September 14, 2006

Google Fights To Use "Gmail" Name In Germany

News.com has a great write up named Behind Google's German courtroom battle. Google had to stop using the name Gmail in the UK, the same thing is being fought over in Germany. Daniel Giersch, a German venture capitalist, has who has a six-year-old trademark registration of g-mail, will not give up his trademark to Google. The German courts have required Google to remove all references to "Gmail" on Google's pages within Germany. Google is trying to argue that "G-mail" is different from "Gmail" and they should be allowed to use the name in Germany. Google is not giving up on this battle, like they did in the UK.

Posted by Barry Schwartz at 9:03 AM | Permalink

August 21, 2006

Subdomains Trademark Violations?

ClickZ has a write up named Can Subdomains Violate a Trademark? In there report, they show how the Jews for Jesus sued the people running jewsforjesus.blogspot.com. The case was ultimately settled out of court and no ruling has been made. But this raises interesting questions. What if we here at Search Engine Watch decided to categorize all Google related topics under the subdomain google.blog.searchenginewatch.com. Is that a trademark violation? I can see how a public hosted domain, like blogspot.com subdomains, might be viewed as more of an infringement of trademark then would be a subdomain hosted on searchenginewatch.com - but even the case above with Jews for Jesus seems a bit far reaching to me.

Posted by Barry Schwartz at 8:52 AM | Permalink

August 18, 2006

Fighting For GoogleCheckout.com & More Google Complaints Against Others Who Registered Google-Like Domain Names

ResourceShelf has compiled sources of historical complaints Google has issued to those who have registered Google-like domain names. To do so, ResourceShelf searched through the "World Intellectual Property Organization's Uniform Dispute Resolution Policy (UDRP) database and the National Arbitration Forum Domain Name Dispute Proceedings and Decisions database for the information. The most recent domains to be transferred to Google's ownership include; googlecheckout.com, googlematching.com, googleoutdoors.com. More details on how to find more of these names at ResourceShelf.

Postscript From Danny: Be sure to read the complaint resolution about Google Checkout. Some highlights:

+ Respondent states that her intended business name is not "GOOGLE Checkout," which ostensibly is identical to the disputed domain name , but rather the term "Go Ogle Checkout," which Respondent contends is not. She intends to use this term in conjunction with an online dating service....

+ Further, just some six days after Respondent registered the name, the media widely reported that Complainant planned on launching its online payment service -- as indicated by the articles, a copy of which appear in Exhibit A to Complainant's Additional Submission, that appeared in, e.g., The New York Times, The Wall Street Journal, and the Associated Press.

With respect to bad faith, Complainant points to the $ 1.25 Million price at which Respondent offered the names for sale as evidencing bad faith. Complainant contends that Respondent's reply, in and of itself, to Complainant's cease and desist letter is not bad faith, rather Respondent's unsolicited offer, in response, to sell the names is. Further, once Complainant rejected this offer, Respondent then reduced her offer to $ 375,000 which again shows Respondent's bad faith....

+ 'Google' is now a verb in the dictionary. 'Go' and 'Ogle' are also generic terms in the dictionary, as is 'checkout', 'matching,' and 'outdoors.' I took three common names out of the dictionary and put them together and coincidentally they happen to spell GOOGLE in them, which is also a common word in the dictionary. Therefore, my domain names do provide a basis for distinguishing them from Complainant's mark....

+ On May 22, 2006, Complainant received a reply email (a copy of which appears in Exhibit 13 to the Complaint) from Respondent through which Respondent stated:

Hi there. I have received your email and do not actively have these domain names in use. ... I am the proud owner of these domain names and others. I am wiling to do a transfer of these domain names to the google property rights at a cost of my expenses and time and future loss of business. I would possibly be willing to accept an offer of $ 1,250,000.00 as a package deal for all three domain names....

+ Later, through an email dated May 23, 2006 (a copy of which appears in Exhibit 15), Respondent offered to sell the names to Complainant as a package deal for $375,000, and in so doing specifically stated:

I have done enough research to notice many other domain names with google's name (not owned by google) and they have active websites, making incomes off of these sites. ...

I am willing to transfer these names over without any further discussion for $ 375,000....

Posted by Barry Schwartz at 8:29 AM | Permalink

August 15, 2006

Three Years On, Google's Trademark Usage Letters Become News Again

How long does it take the wheel to spin full circle on the internet? Apparently three years, judging from the outcry over Google's "new" move to send out trademark protection letters asking people to be careful about how they use the word Google.

We mentioned briefly about the Washington Post getting one of these letters last week. Since then, the Independent came out with its To google or not to google? It's a legal question article, stating:

But the California-based company is becoming concerned about trademark violation. A spokesman confirmed that it had sent the letters. "We think it's important to make the distinction between using the word Google to describe using Google to search the internet, and using the word Google to describe searching the internet. It has some serious trademark issues."

Is becoming? Change that to "has long been concerned," and it's accurate. Let's flashback to March 2003, and my Google Acts To Protect Trademark from that time:

Now Google's first publicized action to protect its trademark from being transformed into a generic word has occurred. The company sent what's now become a well-cited letter to Word Spy editor Paul McFedries asking him to identify Google as a trademark, after McFedries featured Google as a word of the day on his web site.

That letter to WordSpy produced the same type of discussion you now see breaking out in the blogosphere. Big bad Google, beating up on the little guy. Says Steve Rubel, for one:

Beyond the sheer legal issues, one of the places where this of course gets fuzzy is in the definition of "media." How in the world do they expect to enforce this when every blogger under the sun uses the phrase on his/her own sites? It's part of the pop culture.

This has to go down as one of the worst PR moves in history. They're getting all this free publicity and it's right on message. Google sounds like a big arrogant company that has forgotten its roots. That's too bad.

Reality check. Google's doing what it has to do as a trademark holder. The letters aren't legal threats. They are advice, requests, guidance -- which authors can generally ignore. Google's not expecting to "enforce" anything. It's acting to prove it has tried to protect its trademark from becoming a generic term.

As for the letters being one of the "worst PR moves in history," wow. If that's the case, then it's been a three-year long bad PR move that doesn't seem to have slowed down Google's popularity (Doug Edwards over at Xooglers talks about how the earlier furor on the letters passed back in 2003). Somehow, I think things like heavily censoring Chinese search results pose a larger PR problem than these letters for Google.

To underscore how long this has been going on, let's return to the famed WordSpy incident of 2003. WordSpy was sent this letter:

I am trademark counsel for Google. I have recently become aware of a definition of "google" on your website, www.wordspy.com. This definition implies that "google" is a verb synonymous with "search." Please note that Google is a trademark of Google Technology Inc. Our brand is very important to us, and as I'm sure you'll understand, we want to make sure that when people use "Google," they are referring to the services our company provides and not to Internet searching in general. I attach a copy of a short, informative piece regarding the proper use of "Google" for your reference.

We ask that you help us to protect our brand by deleting the definition of "google" found at wordspy.com or revising it to take into account the trademark status of Google.

WordSpy made note of Google as a trademark, and the situation was resolved. What if they hadn't have done that? Probably nothing. Since WordSpy wasn't using the word Google in a trademark sense (IE, trying to pass off a product or service as if it was from Google), trademark issues didn't apply to it.

The Washington Post mentioned it received not just a letter but usage guidance including the eyebrow raising (for some) use of the word "hottie:"

Appropriate: He ego-surfs on the Google search engine to see if he's listed in the results.

Inappropriate: He googles himself.

Appropriate: I ran a Google search to check out that guy from the party.

Inappropriate: I googled that hottie.

WordSpy back in 2003 appears to have received this same guide. A comment at Google Morning Silicon Valley guided me to a New York Times article written in July of this year, where it cites Paul McFedries of WordSpy:

In his book "Word Spy," Paul McFedries writes that Google's attorneys send journalists who use google as a verb a stern letter that cites examples of appropriate ("I used Google to check out that guy I met at the party") and inappropriate ("I googled that hottie") uses.

So enough, please. Google hasn't gone on some new rampage. In fact, they reconfirmed for me they've been sending the same note since 2003. It's also something a large corporation has to do to protect their trademark, as Out-Law describes here.

Advising about usage is a completely different thing than launching lawsuits or sending actual cease-and-desist letters for making use of the word "pod" in a name (as Apple is currently doing) or putting "Mc" in front of things, as McDonalds has done. In fact, it's worth noting that in the three years since Google has sent such letters, it has never to my knowledge actually sued anyone for saying that something was googled.

What about the fact that Google was recently added as a verb to two more dictionaries, the Oxford English Dictionary (in June) and Merriam-Webster (in July). Shouldn't Google be upset with them?

Google's not, because neither definition defines Google as a generic term. Here's the Oxford one:

To use the Google search engine to find information on the Internet. trans. To search for information about (a person or thing) using the Google search engine.

Here's Merriam-Webster:

To use the Google search engine to obtain information about (as a person) on the World Wide Web

In both cases, the definitions are specifically about using Google itself to do a search. That keeps Google happy, as Google told me:

When we were asked our view about being included, we said that because both dictionaries were defining 'Google' as using the Google search engine, not just searching generally on the internet, both were appropriate. We believe that the note is consistent with the dictionary definitions.

I disagree with the last part, however. The "note" of advice isn't consistent with the definitions. Let's go back to some of those inappropriate remarks:

Inappropriate: He googles himself.

Inappropriate: I googled that hottie.

They're appropriate if you inherently understand or mean these were done on Google -- and I think many people would indeed assume that to be the case. So maybe the guidance sheet needs some updating.

Overall, I think everyone knows that Google's trademark police face an uphill battle in having to send these types of letters out. But sadly, that's what the laws seems to require. I guess every three years, we can all get worked up into a state over them, despite the fact that people will keep on saying google as they please.

In the end, the letters will go out and the authors will continue to ignore them and write whatever they want to, as is their right.

Posted by Danny Sullivan at 6:54 AM | Permalink

August 8, 2006

Use Google But Don't Google Asks Google Trademark Police

Google's trademark lawyer has been busy apparently. The search engine is keen for people to use Google, but not to 'google' something. The search engine took offense at a comment in the Washington Post describing the word 'google' as moving beyond a specific product to becoming a descriptor of an entire sector. Google thinks that this is "genericide" and should be avoided.

According to the (hand addressed) letter sent to the Washington Post Google has come up with some examples or suggestions to linguistically aid us in the future. What is appropriate is "He ego-surfs on the Google search engine to see if he's listed in the results.", and inappropriate language is "He googles himself." The example that has given rise to much mirth however is that it is appropriate to use "I ran a Google search to check out that guy from the party", and inappropriate is "I googled that hottie."

So now we know, and it simply remains for me to ego-surf on the Google search engine to see if I'm considered a hottie.

Posted by Phil Bradley at 9:12 AM | Permalink

July 20, 2006

Google Scholar Trademark Case Settled Out Of Court

News.com reports that Google and American Chemical Society trademark case has been settled out of court. The case was brought up against Google for using the name "Scholar," when American Chemical Society has a similar product named "ACS’s SciFinder Scholar." The case was dropped and each side will pay their own legal fees. No other details were provided and both sides have confidentiality clauses.

Posted by Barry Schwartz at 9:42 AM | Permalink

July 17, 2006

Hawaiian Airlines Cries Search Engine Foul Over Use Of "Hawaiian" On Competitor Web Site

Hawaiian Airlines is alleging that new rival Go because Go made use of the word "Hawaiian" too often and thus might be influencing search results.

Hawaiian Airlines says Go's web site goes too far from KHON TV and Local airline battle flares anew from the Honolulu Star Bulletin has more details on the dispute.

If Go is indeed trying to rank well for Hawaiian's name, so far, it hasn't worked. Checking Google, Yahoo, MSN and Ask for [hawaiian airlines] shows that Go doesn't appear on any of them for the first two pages of results.

Hawaiian is a generic term, so it seems pretty absurd to be suggesting that an airline that flies within Hawaii is somehow using the word 'hawaiian" too often.

Clearly, Go hopes that it will be found for the phrase "hawaiian airline," given that it uses that exact phrase in its meta description tag, meta keywords tag, its title tag and five times in its body copy. But "hawaiian airline" is different from "hawaiian airlines," the latter being a trademark of Hawaiian Airlines while the former is a generic term that fairly describes what Go is. And the usage falls well short of what I'd consider keyword stuffing, something Hawaiian has accused Go of doing.

How about from a search perspective? Google's long had stemming, so that a search for the singular might also bring up the plural. But still, you get differences. A search for hawaiian airline is not the same as a search for hawaiian airlines (and Go doesn't show up in either case).

The same is true at other search engines, where you get different results for the different variations. But Go gets more visibility for the generic term.

At Yahoo, Go ranks number 10 for hawaiian airline but not in the top results for hawaiian airlines (and Hawaiian rival Aloha Airlines, not accused of any wrong-doing, ranks in the top results at both places).

At MSN, it ranked number three for hawaiian airline but not in the top results for hawaiian airlines. Aloha came up in neither.

At Ask, it was number six for hawaiian airline and not listed for hawaiian airlines. Aloha ranked in the top results in both versions.

No suit has been filed, so far -- only a cease-and-desist letter sent. From the Star Bulletin's article:

"(Mesa has) loaded up their Web site with our name, which is called keyword stuffing, unlike any of the other carriers we compete with," Hawaiian Airlines spokesman Keoni Wagner said. "Nobody else calls themselves a Hawaiian airline, for example, and we're simply asking them to stop.

"It's like identity theft. Mesa is using our name to gain business, and that's just not right."

Honolulu-based media attorney Jeffrey Portnoy, who represents Hawaiian Airlines, said in a letter to Mesa that the use of the terms "Hawaiian Flights," "Hawaiian," "Hawaiian Airline" and "The Hawaiian Airline" creates a likelihood of confusion, constitutes infringement of Hawaiian Airlines' trademark and represents deceptive trade practices.

Ornstein, reached yesterday at a board meeting in Santa Monica, Calif., said he was incredulous about Hawaiian Airlines' latest legal move.

"This is the most preposterous thing I've ever encountered in my business career, that we're not supposed to use 'Hawaiian' on our Web site for service in Hawaii," Ornstein said. "Are we supposed to use 'Chicago' because it rhymes with 'go!'? This is truly a desperate act that defies comprehension. They have not trademarked the word 'Hawaiian.'"

In the cease-and-desist letter, though, Portnoy pointed out that Hawaiian owns various federal trademark registrations for phrases containing "Hawaiian," such as "Hawaiian Airlines," "Hawaiian Miles" in connection with its frequent flyer program, and "Hawaiian Premier Club" for airline passenger services.

Posted by Danny Sullivan at 7:17 AM | Permalink

July 13, 2006

AdSense Consulting Group Fed Up With Google AdSense

Wired has a story on AdSense, not Google AdSense, but AdSense Consulting, the company who registered AdSense.com back in 1996.

If you visit adsense.com, you will notice Google does not own the site, and they do not provide Google AdSense services.

In fact, they have a message on the site that reads, "If you think you can get rich quick placing other people's ads on your site or blog, please contact Google who has taken and used our business name without permission or compensation."

I find it funny that Google AdSense, which is a contextual ad program, developed to provide relevant sales leads, has done the exact opposite for AdSense Consulting.

AdSense Consulting apparently gets hundreds of irrelevant phone calls and emails to answer Google AdSense customer support related questions, something nothing to do with their business. Sounds incredibly frustrating to me.

The article notes the company has now sold the domain to another company, which has not yet been named. Google declined to purchase it from her, apparently. Google also decided her site didn't qualify to carry AdSense ads, either.

Posted by Barry Schwartz at 9:32 AM | Permalink

June 28, 2006

Google Loses French Lawsuit Over Vuitton Trademark

I just got word that Google lost the French lawsuit we reported on Monday involving the Louis Vuitton trademark. I do not have any more details at the moment, only that they lost. I will try to update this entry when I have more information.

Postscript: I was just sent this information from Bloomberg news. "Google Inc. must pay LVMH Moet Hennessy Louis Vuitton SA 300,000 euros ($375,800) for breaching copyright rules with its advertising service, a French Appellate court ruled."

Postscript 2: News stories are finally now appearing:

• Vuitton tops Google in Paris court, International Herald Tribune
• Louis Vuitton says court upholds Google ruling, Reuters
• The Paris Court of Appeals Confirms Sanctions against Google for Trademark Counterfeiting, Unfair Competition and Misleading Advertising, Louis Vuitton Press Release

Posted by Barry Schwartz at 12:20 PM | Permalink

Marine Selling "Google Water" For Military Families Charity

Boing Boing links to a US Marine who just got back from Iraq. The marine posted on his blog that he began selling "Google Water" on auction to raise money for The Fisher House, an organization that helps military families in need. Google and eBay shut down his auction, "due to copyright violations," but he still has some left over Google Water. He is looking to sell them for a bottle for $500 and give that money to the Fisher House.

Posted by Barry Schwartz at 9:11 AM | Permalink

June 26, 2006

Google Vs. France Trademark Appeal Ruling Expected Wednesday

The International Herald Tribune reports that a Paris appeals court is expected to issue judgment on a trademark violation appeals case this Wednesday. Google is expected to lose this appeal once again, due to how France has treated Google in the past. Just look at these three selected stories we covered in the past on Jan 20, 2005, Feb 4, 2005, and Mar 16, 2005. If Louis Vuitton wins the case, they are expected to push to block the use of the Louis Vuitton trademarks at other Google local properties. But it is highly unlikely that they will have as much success on such claims outside of France, according to the report.

Posted by Barry Schwartz at 9:09 AM | Permalink

June 15, 2006

Yahoo Sued For Trademark Infringement Using Google AdWords

DenverPost.com reports that Yahoo was sued by lovecity.com for bidding on the lovecity.com trademark in Google AdWords. Reportedly, Yahoo placed bids on "www.lovecity" and "lovecity.com," so when someone searches on those phrases, Yahoo Personals would come up in the search ads on Google and Google's search ad network. I tried a search on www.lovecity and saw two competing dating services but not Yahoo, come up in the sponsored listings section. I actually find it humorous that Yahoo would go this far, only because the left hand does not talk to the right hand.

Posted by Barry Schwartz at 9:03 AM | Permalink

May 29, 2006

Google Pressures CHMoogle Into Name Change

The chemistry search engine CHMoogle encountered opposition to its trademark filing by Google, and decided to resort to eMolecules rather than take on the search giant. Although eMolecules' attorneys could argue the different audience and content wouldn't cause consumer confusion, the complaint against them met its mark with CEO Klaus Gubernator. A legal proceeding would distract the company from its mission addressing the lack of "cheminformatics" in Web-wide search engines.

Posted by Detlev Johnson at 9:26 AM | Permalink

May 17, 2006

Belgian Company Suing Google Over Google Suggest Suggestions

Philipp Lenssen points to a press release that shows when you begin to type your search at Google Suggest on "ServersCheck" it brings up results for "ServersCheck Crack," ServersCheck Serial," and other suggested searches of illegal versions of the ServersCheck products. Is this just a ploy for ServersCheck to get some free PR? Google Suggest is used on the Google Toolbar and was added to the Firefox toolbar.

Posted by Barry Schwartz at 9:46 AM | Permalink

April 27, 2006

Google Sued In Israel For Search Ad Trademark Dispute

EEFTimes.com reports that Google is being sued in Israel for enabling an advertiser to buy AdWords targeting a trademarked company's name. Matim Li, the company, is suing Google for $530,000 in Tel Aviv Magistrates Court. Google's issued statement is "the advertiser is the one responsible for the search words and the content of its ad." Just one more trademark case to hit Google, this time, it is by an Israeli company.

Posted by Barry Schwartz at 9:24 AM | Permalink

April 18, 2006

Trademark Concerns Arise in Australia Over Search Ads

The Age reports on possible legal repercussions of buying a trademarked keyword names. Telstra, an Australian based telecom company, was buying the name AAPT at Google AdWords, which is the trademarked name of its competitor AAPT. AAPT sent Google a complaint to remove the ads, the ad was not removed as of yesterday. Hat tip to IPKat.

Posted by Barry Schwartz at 8:52 AM | Permalink

April 17, 2006

Branded Searches Lead To Non Company Site 15% Off The Time

ClickZ reports on a Hitwise study that shows that 15% of branded searches lead to competitor's sites, comparison shopping engines and affiliates as opposed to the official brand Web site. The study also shows that branded searches are up 17 percent over the same period last year. The study shows that for some branded keyword searches, diversion from the official company site is as high as 26 percent, as with the case with the search query "allstate insurance." You can request a copy of the report here.

Want to comment or discuss? Visit our Search Engine Watch Forums thread, What Percentage Of Brand Name Traffic Should Brand Names Get?

Posted by Barry Schwartz at 9:33 AM | Permalink

March 30, 2006

Protecting Your Online Intellectual Property

The law is still in its formative stages when it comes to the web, search engines and other online technologies. What do you do when someone is uses your trademark in a paid listing, or is scraping your content without permission and making money with contextual ads? Or what if a competitor alters your press release to point to their own site? These and other questions were debated by a panel of legal experts at a recent Search Engine Strategies panel, covered in today's SearchDay article, Trademark Protection, Copyright and Search Engines.

Posted by Chris Sherman at 9:07 AM | Permalink

Keyword Trademark Infringement Case To Go To Court

Elinor Mills at News.com reports that a case where a competitor purchases a trademarked name in its PPC campaign is going to go to court. Real Estate company, Edina Realty is suing TheMLSonline.com for using "Edina Realty" in their search advertising campaign. Edina Realty is suing for trademark infringement and trademark dilution and would be the "first case" to do so, in court.

Postscript: Also read Eric Goldman from Marquette University Law School thoughts on this here.

Postscript 2: Gary Price has posted the full-text of the case here.

Posted by Barry Schwartz at 8:18 AM | Permalink

February 23, 2006

Yahoo To Ban Bidding On Competitor Trademarks To Stop Comparison Advertising

Yahoo No Longer Allow Bidding On Trademarked Terms on our SEW Forums has news that Yahoo will no longer be allowing companies to purchase ads linked to the trademarks of their competitors. From what's being sent to advertisers:

On March 1, 2006, Yahoo! Search Marketing will modify its editorial guidelines regarding the use of keywords containing trademarks. Previously, we allowed competitive advertising by allowing advertisers to bid on third-party trademarks if those advertisers offered detailed comparative information about the trademark owner's products or services in comparison to the competitive products and services that were offered or promoted on the advertiser's site.

In order to more easily deliver quality user experiences when users search on terms that are trademarks, Yahoo! Search Marketing has determined that we will no longer allow bidding on keywords containing competitor trademarks.

OK, I haven't had a chance to talk with Yahoo yet, but here are few key points from what I see so far:

• The policy doesn't seem to completely ban bidding on terms that are also trademarks, which is good. I won't spin out all the long explanations about why that is good, as I've done in the past. The short answer is that some products and services simply cannot be adequately advertised if you can't bid on a term that also is a trademark. Try selling "used ipods" if you can't buy the term "ipod," for example. Or look at the trouble this person is having about helping to advertise Ferrari driving experiences without being able to buy ads linked to that term on Google in Europe.  
• In the US (where the Yahoo policy is coming into effect), the courts have so far upheld the right to link ads to terms that might also be trademarks. That's why Google allows you to buy ads linked to these terms in the US. You simply cannot use the terms in your ads. In Europe, you can't use the terms as trigger words or in copy. Google's full policy is here.  
• Betcha I know what's prompted the move. Yahoo has been doing more and more work to attract big brand advertisers to link non-search campaigns back to search. The problem is, that means other competing brands can capitalize on this traffic. Mazda Taps Into Pontiac TV & Search Ads Again covers more about this. An easy way to stop your big brand advertisers you've partnered with from being walked over this way is to ban "comparison" ads linked to their campaigns.

Need more history on search ads and trademark disputes? The Legal: Trademarks section of the Search Topics area available to Search Engine Watch members has lots and lots of information.

Want to comment or discuss? Visit our SEW Forum thread, Yahoo No Longer Allow Bidding On Trademarked Terms.

Posted by Danny Sullivan at 1:06 PM | Permalink

February 14, 2006

Check 'n Go Sues Google Over Keyword Trademarks

We have another lawsuit against Google for trademarks of company names being searched on. News.com reports that Check 'n Go is suing Google over a trademark dispute where searches can type in "check n go" into Google and up comes ads for its trademark.

Danny, Gary and Chris have written dozens of blog entries on trademark cases in search. Search Engine Watch Members can view them easily by clicking here. The most recent big case on this issue was when Google settled with GEICO but no terms of the deal are noted in that case.

Posted by Barry Schwartz at 9:44 AM | Permalink

February 2, 2006

TrueLocal Australia Users Crash Into TrueLocal North America

Jake Baillie from TrueLocal (see our review from December here) mentioned to me earlier this week that down in Australia, a new Rupert Murdoch/News Corp/News Interactive-backed truelocal service has launched. OK, clearly there's a potential legal issue if Murdoch tries to move his service into the North American market that Jake's search engine service. But it's not a big deal unless that actually happens, right? Apparently not. Via Barry over at Search Engine Roundtable, Will the real TrueLocal please stand up? from the Sydney Morning Herald covers how hundreds of Australians are apparently going to Jake's TrueLocal rather than Murdoch's.

Jake's quoted in the article as saying News Interactive was aware of his service. Despite this, I gather News Ltd. decided not having the .com address was OK. Bad move, though probably a nice payday for Jake down the line.

Posted by Danny Sullivan at 1:02 PM | Permalink

January 27, 2006

Judy's Book Gets "Social Search" Trademark; Yahoo Apparently Says Jump In A Lake

Judy's Book would like the world to know they know have a trademark on the phrase "social search." Never start a land war in Asia on their blog explains how they filed for it almost two years ago but that since then, a large unnamed company have begun using it. So they placed a call to the unnamed company to say stop it.

The large company pretty much has to be Yahoo -- and if Judy's Book has a beef with them, they ought to just name in them in the blog entry. But it's a nice way to drum up some publicity, I suppose. Everyone loves a good Judy versus Goliath story.

Why do I think it's Yahoo? Here are are two press release entries:

Yahoo! Audio Search's integration with My Web, 2.0, http://myweb2.search.yahoo.com Yahoo!'s new social search engine... (see here)

In addition, the new My Web feature, Yahoo!'s new social search engine that harnesses the collective knowledge of the My Web community, provides relevant links to information related to the news topic. (see here)

Says Judy's Book:

In theory, this means that we have the exclusive and legally-protected right to use this phrase in association with the idea of personalized search results generated with the help of social networks. But as we've recently learned, this theoretical right has been interpreted differently by some of our larger competitors...

Now, we're a pretty small company, and when we first saw our trademarked phrase being used by this (much bigger) company, we thought: hmmm, maybe they aren't aware that we've already registered Social Search as a trademark. So we called a friend down there and asked him to pass along the news of our claim to the right folks. Naively, we figured that as soon as they realized they were stepping on someone else's trademark, they'd adjust their messaging accordingly.

Well, you all know how this story goes. What we heard back, "unofficially" of course, was that they didn't much care what we'd taken the trouble to file with the USPTO, or when we'd filed it. They really liked the sound of Social Search, and they intended to keep on using it pretty much as they pleased.

Judy's Book says they'll save their money and not have a legal fight over the term. I have no idea if they'd win or not.

I called Eurekster a "social search" engine back at the beginning of 2004, before Yahoo was using that or I'd ever heard of Judy's book. Later that year, I said to expect more of what I was dubbing "social search engines." No one told me to call them that. That just seemed to be the generic way to describe them, sort of like calling a web search engine, well, a web search engine. Can't wait to see who gets a trademark for "web search."

Here's a mention of "social search" from 2001 by someone else, so I'm hardly the creator of that term. I'm sure there's plenty of prior usage before the trademark was filed. Again, no idea of the impact that might have on trademark usage. But it seems to me that the term doesn't really belong to Judy's Book any more than Yahoo. But that's just my unlegal opinion on things.

Posted by Danny Sullivan at 2:19 PM | Permalink

January 6, 2006

It's All About Google Results: German Blogger Asked to Remove Mention Of Organization from His Posts

Again, via Google Blogscoped, Philipp reports that a "well-known" German blogger was sent a cease and decist letter by the Sozialgericht Bremen, a court of law in Germany that deals with cases in the area of German social services. Why?

...for having one of his blog posts appear in the Google results top ten for ?Sozialgericht Bremen? Welcome to the world wide web, Sozialgericht, and welcome to Google.

Much more in P.L. post. My thoughts? If this wouldn't have come from a very reliable source, it sounds like a news item you might read in The Onion.

Posted by Gary Price at 12:16 PM | Permalink

December 28, 2005

Full Text of Complaint Filed in Jews for Jesus v. Google Case

Last week, Danny blogged about a copyright infringement lawsuit filed by Jews for Jesus against Google regarding a blog hosted on their Blogspot service. Today (I haven't had a chance to read it yet), the complete complaint filed by Jews for Jesus with a federal court in the Southern District of New York became available online. I've posted the full text of the 48 page; PDF complaint here.

For more Google lawsuit news, I posted an item yesterday that discusses a patent infringement case against Google regarding some of the technology the company uses to power the VoIP portion of Google Talk.

Postscript: Eric Goldman, a law school professor at Marquette University in Milwaukee has posted an in-depth look at a case he says the case, "raises some complex and unsettled legal issues."

Posted by Gary Price at 3:36 PM | Permalink

December 23, 2005

Jews For Jesus Sues Google Over Blogger Blog

Jews for Jesus Group Sues Google from Reuters covers Google being sued by the group in New York to force it to give up the jewsforjesus.blogspot.com blog hosted on Google's Blogger service. Haven't seen the suit documents, so it's unclear whether the "right" to the group's own name it demands only means it wants jewsforjesus not to be used as part of the address or whether it simply thinks the site shouldn't be allowed at all.

Posted by Danny Sullivan at 10:54 AM | Permalink

December 20, 2005

Google AdSense For Domains Program Overdue For Reform -- And Yahoo & Microsoft Should Also Take Note

MS Research: Typo-Squatters Are Gaming Google from eWeek covers Microsoft researchers discovering Google's long-standing DomainPark program (AKA AdSense For Domains), where if you have a popular domain name with lots of traffic but no content, Google will kindly hand you some AdSense ads to turn it into an earner. While it is long-standing, I'd say it's also generally little known and definitely upsetting to people who come across it for various reasons.

In Google AdSense For Domains Program Overdue For Reform -- And Yahoo & Microsoft Should Also Take Note for Search Engine Watch members, I do a detailed look at the history of Google's program plus issues it and Yahoo's similar program raise for the search industry in general. Below is a summary for everyone.

• Google Buys Applied Semantics from Search Engine Watch covers how Google inherited the lucrative DomainPark program when it purchased Applied Semantics back in 2003. Google later changed the name of DomainPark to Google AdSense For Domains.  
• Tapping into typo traffic was happening even back then. The IRS.org site (as opposed to IRS.govo) I wrote about as an example in 2003 still runs with paid links today.  
• Complaint On Yahoo PPC On Placeholder Sites and NonConverting Traffic Coming From Google's DomainPark Program are forum threads that show how advertisers question how relevant traffic can be from sites that someone never intended to go to in the first place.  
• Far from being gamed, as the eWeek article suggests, anyone in the Google domain program should have been reviewed or approved by Google itself.  
• Antivirus vendor F-Secure gives a good example on its blog today of how typo traffic helps tap into those probably trying to reach F-Secure. It goes further and shows how this also costs F-Secure money in that Google puts F-Secure's own ads on the typo site.  
• Advertisers who opt out of contextual are NOT opted out of Google AdSense For Domains, as Strange Log Referrer - Advice Please? explains.  
• From first hand experience, Google doesn't seem to worry that typo domains violates its own rules against trademark violations, since when I queried why serachenginewatch .com, a misspelling of our own searchenginewatch.com domain, was allowed to carry ads, Google flagged no issues with it.  
• Google's in the mixed message situation of saying that contextual ads can't be on parked domains yet completely allowing the minute someone's accepted into the domain program.

Overall, I don't have an issue with non-typo domains being in these type of programs, since it's hard to say they really harm another site or the surfer coming to them.

In contrast, for the person who is running a misspelling of our searchenginewatch.com site -- or the same for the person doing the misspelling of the F-Secure site, there's little doubt they're hoping to benefit off the brand traffic these two sites have helped.

Navigation is a big part of search, and you'd think the search engines would want to ensure people were navigating to the right site. Instead, Google and Yahoo both seem happy to benefit by making money off these misspellings. That should change. Forget whether there's a trademark violation. Just outright ban the use of domains where it's obvious the site owner is hoping to tap into typo traffic.

At the very least, Google should make AdSense For Domains a program that really is independent of AdSense For Search and allow people to opt-out. It certainly should be pondering the mixed message of telling AdSense For Content people that they can't put ads on parked domains on the one hand yet running a massive program that does exactly that on the other.

And lest the Microsoft researchers feel to happy, they'd better understand that Microsoft fully intends to have its own contextual program in the future. That program almost certainly will face a decision on whether to provide paid links to parked domains. If Microsoft's not careful, its own researchers might end up reporting on typo domains that make Microsoft money.

FYI, I am following up with Google and Yahoo on the issues raised in the story and will post a follow up article in the near future.

Want to comment or discuss? Visit our SEW Forums thread, AdSense For Domains Garbage Traffic.

Posted by Danny Sullivan at 3:35 PM | Permalink

October 21, 2005

Letting MSN Search Know About Trademark Concerns

I noticed a new page today on the MSN Web Search Help site titled, "Submit a Trademark Concern." It offers a step-by-step guide on how to contact Microsoft over these types of issues.

From the site: We require our advertisers to comply with MSN’s trademark guidelines and to refrain from infringing upon the trademark rights of others. Occasionally, however, we are notified of an advertiser’s potentially improper use of someone else’s trademark. If you notify Microsoft of your concern that an advertiser's listing or associated keyword represents an improper use of a trademark, Microsoft will review the advertiser's keyword and listing for compliance with our trademark usage guidelines. If appropriate, Microsoft will remove the advertiser's keyword and/or listing, or require that the content of the listing be modified.

Posted by Gary Price at 10:15 PM | Permalink

October 20, 2005

Avoiding Legal Gotchas with Search Engines

It's still very early in the game when it comes to search engines and legal issues. Although a number of lawsuits have helped clarify things like appropriate content in meta tags and whether using trademarks is fair game, lots of other issues are still unclear and up in the air.

It's important to understand these issues if you're a search marketer, both to stay out of trouble and to know what recourse you have if someone poaches your intellectual content. A panel of legal experts discussed these issues on a recent Search Engine Strategies panel, and guest writer Grant Crowell caught the session, reporting on it in today's SearchDay article, Copyrights, Trademarks and Search Engines.

A longer version of this story for Search Engine Watch members goes into more detail about various methods to protect your intellectual content, including how to safeguard images from being copied, and a checklist for taking action if you've found that your content has been stolen and illicitly used elsewhere on the web.

Posted by Chris Sherman at 6:07 AM | Permalink

October 19, 2005

Gmail Becomes Googlemail in the UK

Gmail is now known (at least for the time being) as Googlemail in the UK.

Since January we've been blogging about a UK company that claims it was using the name G-mail for a mail service before Google launched their Gmail.

Today, according, to News.com, Google (at least for the present time) is changing the name of it's mail service to Googlemail in the UK.

Why did Google make the change?

A Google representative said that the search giant decided to change the suffix after protracted wranglings with research firm Independent International Investment Research (IIIR), which uses the name G-mail to refer to a part of its financial analytics software.

"We are still working with the courts and trademark office to ensure our ability to use the Gmail name, but this could take years to resolve," the representative said. "And in the meantime, we want our users to have an email address and experience they can rely on. We also want to relieve both Google and our users of the distraction of the dispute."

While all previous Gmail accounts will remain valid, new U.K. users signing up for Google's email service will be given accounts ending in @googlemail.com, rather than @gmail.com.

Additional SEW Blog Coverage + Google Accused of Issuing Misleading Statements in Gmail Name Dispute + Will GMail Be Taken to Court? + Gmail Trademark Infringement Lawsuit News

Postscript: As PL points out, Gmail is has been known as Google Mail in Germany since the summer.

Posted by Gary Price at 11:11 AM | Permalink

October 9, 2005

Hey Dude, Yahoo Wants You To Dig It, Tag It, and Share It!

The Yahoo team in Sunnyvale has filed for a new trademark/service mark with the U.S. Patent and Trademark Office that hits on tagging and sharing (aka MyWeb 2.0).

What's the phrase Yahoo is registering? + "Dig It. Tag It. Share It." Serial #: 78720852

Kind of reminds me of the line from Fast Times at Ridgemont High -- "Right, learn it, know it, live it."

Might this be a new Yahoo/MyWeb slogan?

I'm guessing (oh no!) that "dig" means to look, search and hopefully find material of value. If not, using the word "dig" just sounds so cool! (-:

Of course, the slogan plays on Yahoo's FUSE philosophy of finding, using, sharing, and expanding knowlege.

Posted by Gary Price at 4:13 PM | Permalink

October 4, 2005

Apple Europe Crackdown On Google Ads?

Spotted via Steve Rubel, Apple Cracks Down on Google AdWords at TidBITS suggests that Apple may be pushing on Google to enforce rules preventing advertisers from having ads show up in response to its trademarks in Europe.

Though the ads were initially said to have been stopped because of the use of the word "Mac" in the ad text, it later turned out that the complaint involved ads targeting that word that were showing up in the EU. The solution seemed to be restricting the ads to show up only in the US.

Google's trademark policy differs in the US and the UK. In the US, you can target ads to show up in response to terms that are also trademarks. You simply cannot use trademarked terms in ad COPY, if a trademark holder objects. In the EU, Google may restrict the ability to target ads to show up in response to terms that are also trademarks AND/OR the use of those terms in ad copy.

Why? Google has faced different lawsuits. In the US, the GEICO case found that linking ads to terms that are also trademarks was not confusing nor a trademark violation. But the court did think the use of trademarked terms in ad copy potentially might be confusing. Google's policy in the US gave it an end run around this.

In the EU, Google's lost cases about ads being triggered by terms that are also trademarks, thus the tighter policy.

Posted by Danny Sullivan at 8:52 AM | Permalink

October 3, 2005

Search Ads & Trademarks Cases Beyond Google-GEICO

R.I.P. Geico versus Google from iMedia Connection is a nice rundown on other cases on the docket that involve trademarks linked to search ads and how they have become more important now that the Google-GEICO case has been settled.

Posted by Danny Sullivan at 1:47 PM | Permalink

September 26, 2005

Google Accused of Issuing Misleading Statements in Gmail Name Dispute

Do you remember a blog post from a couple of week's ago about a possible lawsuit by a UK firm against Google over the name Gmail? This Sunday Times article reports that the dispute is quickly turning into a war of words as Independent International Investment Research (IIIR), the company who has been contesting the use of the Gmail trademark, says that Google has been issuing "inaccurate and misleading statements."

From the article: Times Online today had sight of an e-mail exchange between Google and the chief executive of Independent International Investment Research (IIIR) - which is threatening legal action over the trademark for GMail. In the e-mails, the IIR takes Google to task over official comments it made in response to his case.

Much more in the article: Google accused of misleading in Gmail row.

Posted by Gary Price at 7:00 PM | Permalink

September 13, 2005

Yahoo Files For Two Trademarks

Yahoo recently filed with the US Patent and Trademark Office for two new trademark or to be more precise, service marks.

First, Search Engine Roundtable points to the Yahoo Moves To Trademark Y.com discussion in our Search Engine Watch Forums about Yahoo applying to trademark the term "Y.com." This filing was made on August 22, 2005. Next, three days later on August 25th, Yahoo filed to trademark/service mark an oval and exclamation point logo. You'll see an example at the top of the application.

Posted by Gary Price at 4:21 PM | Permalink

Geico To Competitors & Affiliates: Don't Buy Our Name!

Geico Warns Competitors About Search Engine Ads from AdAge covers how Geico is warning competitors not to buy its name on Google or other search engines as an ad term, threatening legal action. This comes in the wake of the settlement between GEICO and Google over ads involving its name. It seems to suggest that since it couldn't win to stop Google from carrying such linked ads, the battle now turns to target advertisers.

Posted by Danny Sullivan at 11:12 AM | Permalink

September 12, 2005

Will GMail Be Taken to Court?

According to a Times Online article: New legal threat to Google over GMail, a UK company is considering taking Google to court over the name Gmail after finding no joy from 15 months of negotiations and contacts.

The story says that Independent International Investment Research (IIIR) developed and began offering a web-based email service named G-Mail back in May 2002. Google's GMail service launched at the end of March 2004.

We first blogged about IIIR and trademark concerns over G-Mail back in January.

What's new today is that IIIR is announcing that after, "15 months of 'correspondence and negotiations' with Google, no agreement has been reached.

Mr [Shane] Smith, who founded the company and is the leading shareholder, told Times Online that the two companies had held "detailed discussions" over the terms of a possible settlement, with both sides making offers but failing "to meet in the middle". He said he was "reluctantly" considering taking legal action against Google, which could involve his family trust selling shares in the group to fund the claim.

According to IIIR, how much is the name GMail trademark worth?

From the article: An independent valuation report commissioned at the end of last year by IIIR, whose clients include Bank of America and Commerzbank, estimated a "conservative" value of between £25 million and £34 million for a royalty claim against Google for the G-Mail trademark.

You can read more in this four page "Google Negotiations" status report (PDF) from IIIR. Also, this PDF document contains the 19 page trademark valuation report mentioned above.

Posted by Gary Price at 2:06 PM | Permalink

September 8, 2005

Google & GEICO Settle Dispute

Geico, Google settle lawsuit from Reuters notes that Google and Geico have settled their dispute over ads linked to terms that are also GEICO's trademarks. Unfortunately, no terms of the deal are noted. There will likely be follow-ups to this, and I'll postscript here or link to new posts. For some background on the case, see:

• U.S. District Court Judge Issues Written Decision in Geico v. Google AdWords Case
• Looking Back at Google-Geico
• Tips For Search Marketers Following The Google-Geico Ruling
• Google Victorious in Trademark Lawsuit with Geico

Posted by Danny Sullivan at 5:59 AM | Permalink

August 15, 2005

U.S. District Court Judge Issues Written Decision in Geico v. Google AdWords Case

Out-Law.com reports that the judge in the Geico v. Google case recently released a written version of her ruling in a case that made news last December.

From the Out-Law.com post: A US district court has ruled against Google in a trade mark action over the sale of the terms ?Geico? and ?Geico Direct? in AdWords, its keyword advertising service. The judge found that there was infringement where the terms were used in the text of sponsored ads...In a ruling issued on Monday [8/8/05], Judge Brinkema ruled that GEICO had ?established a likelihood of confusion? and that there had been a breach of the insurance firm?s trade mark rights ?solely with regard to those sponsored links that use GEICO's trade marks in their headings or text." According to GEICO, the court has stayed the trial for 30 days to give the parties an opportunity to settle. If the parties do not settle, the trial will continue on the question of damages and on the issue of who is liable: Google or Google's advertisers.

Postscript: Google has sent along some comments about this SEW post and the link to the Out-Law.com story I included. Thanks. I saw your post on the GEICO ruling and thought it might be helpful to clarify a few things. The recent ruling by the judge in this case was essentially a written version of the judge's oral ruling of December 15, 2004. Her ruling was an extraordinary victory for Google. In the critical part of the decision, the judge ruled unequivocally in Google's favor.

In her written ruling, she stated that the evidence "refutes the allegation that the use of the trademark as a keyword, without more, causes a likelihood of confusion." That confirms that Google's policy on trademarks and keywords is lawful.

There was another issue in the case that concerned the use of trademarks in ad text, but that part of the case was not significant and Google already has a policy that addresses this concern - and we always have. Here's a reference to that: http://www.google.com/tm_complaint_adwords.html

And here is an excerpt from the trademark policy that you will find there: "When we receive a complaint from a trademark owner, we will only investigate whether the advertisements at issue are using terms corresponding to the trademarked term in the advertisement's content. If they are, we will require the advertiser to remove the trademarked term from the content of the ad and prevent the advertiser from using the trademarked term in ad content in the future. Please note that we will not disable keywords in response to a trademark complaint."

Google is extremely pleased with the outcome in this case. The important issue for us in it - which is the use of trademarks as keyword triggers - was decided decisively in our favor.

Michael Kwun Litigation Counsel Google Inc.

Posted by Gary Price at 2:38 PM | Permalink

July 8, 2005

Google Wins Domain Name Dispute

This news release points out that Google has emerged victorious in a domain name dispute.

"Google Inc., filed a complaint with the National Arbitration Forum on May 11, 2005 asserting legal rights to Web addresses [googkle.com, ghoogle.com, gfoogle.com and gooigle.com] bearing close resemblance to Google.com. Ruling in Google?s favor, National Arbitration Forum arbitrator Paul A. Dorf found that the other party, Sergey Gridasov, registered the googkle.com and ghoogle.com on December 30, 2000 and the domain names gfoogle.com and gooigle.com on January 12, 2001?after Google registered its domain in late 1999. The other party was also using the disputed domain names to direct Internet users to Web sites that attempt to download viruses, trojan horses and spyware to the users? computers. The disputed domain names contain links to various products unrelated to Google.

You can read the full text of the decision here.

It will be worth monitoring to see if the Googlepex will begin asserting their legal rights over other registered domains that either resemble Google or include the word Google in the domain name.

Posted by Gary Price at 3:10 PM | Permalink

June 21, 2005

Search Engine Domain Seizures In Australia

Misspelled Google case may end up in court from ZDNet Australia covers how Australian search engine marketer Peter Bojanac is considering a lawsuit against the au Domain Administration (auDA) for the domain googl.com.au that he registered but was "confiscated" by auDA.

The regulator's chief executive Chris Disspain said it was an obvious misspelling of Google and therefore its registration was against his organisation's domain policy..."They're in the process of deleting that domain name," he said. "I've requested the return of it, otherwise I'll take legal action against them." "Google have a trademark on 'Google'. They don't have a trademark on 'Googl'," he pointed out.

Earlier this month, auDA seized more than 1,000 domains from the Ansearch Australian search engine. More on that in this article from ZDNet Australia, auDA confiscates dodgy Ansearch domains. Our forum thread Beta Search Engine to be launched in Australia had some discussion and criticism of the registrations back in November.

Posted by Gary Price at 11:45 AM | Permalink

May 2, 2005

Yahoo Service Marks the Terms "Pearl Hunter" and "Cover Art"

I posted a week ago about a couple of new Google trademarks (technically they're called service marks) and I thought it would be interesting to see if I could find any new service marks that Yahoo had filed for with the US Patent and Trademark Office. Here's what I found. What new services or programs (if any) they might be telegraphing is (of course) to be determined.

A selected list of words and phrases that Yahoo has filed for service marks with the USPTO, 2004-Present:

+ "COVER ART" This filing was made with the USPTO less than a month ago. + "PEARL HUNTER" Also filed for less than a month ago. + YAHOO 360 Filed for at beginning of March.

Selected 2004 Filings from Yahoo + "LIFE IS ALL AROUND YOU. YOU JUST NEED TO FIND IT" + "EVEN WHEN YOU'RE OUT, YOU'RE IN" + "DIGDIG" + "Y20" + "SMARTFIT"

Posted by Gary Price at 6:44 PM | Permalink

April 15, 2005

Google Sues Froogles Over Its Name

Last July we posted an item to the SEW Forums about Google asking ICANN (the domain name organization) to not allow Froogles (a discount shopping site) to use the domain because it was "confusingly similar" to Google.

Google lost. The AP reported:

"The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Google's mark," the panel found. The name Froogles.com "creates an entirely new word and conveys an entirely singular meaning from the mark."

Again, this all went down last July.

Today, the South Florida Sun-Sentinel reports that Google has now filed suit against Froogles in a U.S. federal court alleging trademark infringement.

A David-vs.-Goliath saga pitting a Long Island entrepreneur against Internet giant Google Inc. may hinge on just that, according to papers filed this week in federal court..."Personally, I find it ironic that a company whose motto is 'do no evil' would put so much effort into trying to muscle me out of my business," [Richard] Wolfe [the owner of Froogles.com] wrote in an e-mail Thursday...Google spokesman Steve Langdon said federal court was the proper venue for deciding issues of "use and registration" of the trademark "in a single proceeding."

We've also tracked down the full text of the complaint that Google filed with the U.S. District Court for the Eastern District of New York. You can access the filing (68 pages; PDF) here.

Posted by Gary Price at 6:39 PM | Permalink

April 7, 2005

Update: NY Gubernatorial Candidate Removes Google Ad

Elliot Spitzer, a Democrat running for governor of New York has pulled the Google ad that Danny blogged about yesterday. The keyword ad appeared when searching the name of an insurance company Spitzer is prosecuting as New York Attorney General.

From the Reuters article: "It wasn't appropriate, and as soon as Mr. Spitzer found out about it, he had it removed it as soon as possible," Darren Dopp, a spokesman for the New York attorney general, told Reuters.

Dopp said it appeared that a relatively low-level campaign staffer responsible for promoting Spitzer's campaign Web site made a mistake and put in the AIG keyword.

More in the article: Spitzer pulls campaign ad off Google.

Posted by Gary Price at 10:53 AM | Permalink

April 6, 2005

NY Governor Candidate Spitzer Targets Google Ads Against Prosecution Victim

New York gubernatorial candidate Eliot Spitzer is apparently targeting campaign ads on Google to the name of one of his prosecution targets. Spitzer, currently New York's attorney general, has ads showing up when people search for AIG -- the acronym of insurance company American International Group. More details from Reuters in NY's Spitzer Gubernatorial Campaign Goes to Google

Google's policies allow for terms that are also trademarks to be targeted with ads as long as the trademark isn't used in ad copy. Spitzer's ads apparently didn't do that, saying only "Spritzer for NY Governor." When I run that query now, I also don't see the ads at all. However, it was interesting to see a New York Times ad targeting the word:

NYTimes.com Business Insurer Admits Bad Accounting Read this article at NYTimes.com nytimes.com

Posted by Danny Sullivan at 5:55 PM | Permalink

April 1, 2005

American Blind Vs. Google Trademark Case To Go Forward

Google Takes Hit in U.S. Trademark Case from InternetNews.com notes that American Blind's case against Google over trademark infringement relating to paid ads is being allowed to go forward to trial. John Battelle has a copy of the ruling up here, for those interested in reading it. For some background, see also Search Engines Turning Trademark Law Upside Down and Trademark vs. Search: Do you Soo...gle?.

Posted by Danny Sullivan at 10:51 AM | Permalink

March 16, 2005

France: Google Loses Appeal of Trademark Case

Google has lost an appeal of a trademark infringement case in France and will have to pay $100,300 in damages.

The court in Versailles, west of Paris, found that Google Inc. was guilty of "trademark counterfeiting" and ordered it to pay the damages originally awarded to French travel companies Luteciel and Viaticum, as well as costs.

More in the article: Google Loses French Trademark Appeal.

Posted by Gary Price at 1:32 PM | Permalink

March 13, 2005

Leading UK Travel Providers Stop Keyword Advertisers from Using Their Trademarks in Google Ads

Interesting read on the Silicon.com site about three leading UK travel providers (First Choice, Thomas Cook and Thomson) telling travel agents that they are no longer allowed to use their trademarks in keyword advertising on Google.

Before the ban, travel agents were able to include the operators' names in their keyword search text, bumping them up Google rankings when would-be holidaymakers used the search engine to find potential getaways.

More in the article: Travel companies ban trademarks from Google

Posted by Gary Price at 1:13 PM | Permalink

February 8, 2005

Google and Trademark Infringment Issues Discussed on NPR

For those of you who track trademark infringement issues and search engines, National Public Radio aired a five minute story this morning discussing recent trademark infrigement lawsuits and court decisions in France and the U.S. The story is titled, "Corporations Sue Google over Results for Competitors" and can be listened to online (RealAudio). The report includes comments from the attorney representing American Blinds and Wallpaper in a case against Google.

Posted by Gary Price at 5:31 PM | Permalink

February 4, 2005

Google is a Loser in a French Court, Again

For the second time in about two weeks were blogging about Google losing a trademark-infrigement case in France. News.com is reporting that a Paris District Court today ruled against Google in a October 2003 lawsuit filed by high-end fashion deisgner Louis Vuitton.

Google has been ordered to pay $257,430 (200,000 euros) for trademark counterfeiting, unfair competition and misleading advertising.

Louis Vuitton applauded the ruling, highlighting the danger that some sponsored search results tied to its name can promote counterfeits. "It was absolutely unthinkable that a company like Google be authorized, in the scope of its advertising business, to sell the Louis Vuitton trademark to third parties, specifically to Web sites selling counterfeits," a company representative said in a statement via e-mail. "This milestone ruling grants protection for the first time to both consumers and brand owners by finding that Google's Adwords and Premium Sponsorship services as misleading

More in the article, Google loses trademark case in France.

On January 20, we posted about Google losing a trademark case filed in France by Le Meridien Hotels and posted a translation of that decision a few days later.

Posted by Gary Price at 9:01 PM | Permalink

January 25, 2005

Translation of French Court Order in Recently Decided Google Case Last week we learned and blogged about Google losing a trademark infringement case in France. SEW Blog reader F.G. lets us know that a english translation of the court's decision is available via this French legal web site. Also, Out-Law.com has a few additional details in the article: Google loses French AdWords case.

Postscript: The Google Vs. Le Meridien Revisited article for Search Engine Watch members takes a closer look at how the ruling does not completely forbid bidding on trademark terms but does highlight how bidding suggestion tools can make search engines more liable in such cases.

Posted by Gary Price at 1:52 PM | Permalink

January 20, 2005

Google Loses Trademark Infringement Case in France

On December 15th Google was victorious in a trademark-infringement lawsuit filed by GEICO in a U.S. Federal Court.

However, as Stefanie Olsen reports on News.com, it was a different story the next day for Google in France.

In a blow to Google's keyword-bidding engine, the French court ordered the company to stop linking ads to Le Meridien-trademarked terms by Monday or face a daily fine of $194 (150 euros). The company must also cease linking ads related to Le Meridien brands within 72 hours of whenever Le Meridien notifies it of listings in violation, or face a daily fine of 150 euros. Finally, Google must pay all court fees and a fine of $2,592 (2,000 euros). Google will appeal the decision.

More in the article: Google loses trademark dispute in France.

This is not the first time Google has been taken to court over trademark infringement issues in France.

+ In October 2003, Google was fined after losing a case filed by two travel agencies.

+ Also in October 2003, it was first reported that Louis Vuitton was suing Google. Google eventually was fined and told to stop the practice.

Posted by Gary Price at 7:15 PM | Permalink

January 7, 2005

Gmail Trademark Infringement Lawsuit News

AFX News has a brief item about the Gmail trademark infringement suit that Independent International Investment Research filed against Google over the summer. The article says that IIIR has sent a "independent valuation" of the trademark to Google. Gmail is the the of a web-based e-mail service that IIIR has operated since 2002. More about this and other Gmail trademark disputes in a ZDNet article published in August.

Posted by Gary Price at 9:54 AM | Permalink

January 4, 2005

Can We Solve Trademark Issues Outside The Courts?

Nothing burns ClickZ columnist James Hering more than "a cheap competitor" trying to "hijack a customer" by purchasing ads linked to keywords that are also the trademarks of his clients, as he writes in Will Branded Keywords Kill Search?

Sure, that act would upset any brand holder. But as I've written often before (such as in Google Unlikely To Ban Trademark-Linked Ads), the issues aren't so simple. How about the protest group with a valid complaint against the brand holder. They can't buy an ad linked to that name? And someone who wants to sell a product such help with Windows-based computers. Do they need Microsoft's permission to advertise on something like "windows help?"

Now the idea Hering has in his column of search engines, advertisers and others coming together in some type of summit to figure out the best way forward is a great one. I'd love to see it. It won't stop the court cases, however. Someone is going to push this in the courts until we get a final legal resolution. But there's no reason why various stakeholders can't come together with some resolution that's equitable to all outside of the legal framework. That could also have an impact on whatever the legal systems ultimately decide, as well.

FYI, for another exploration of the many issues involved, see coverage of our mock court case held during SES San Jose: Trademark vs. Search: Do you Soo...gle?

Posted by Danny Sullivan at 9:47 AM | Permalink

January 3, 2005

Looking Back at Google-Geico

A recap and look ahead on the Google-Geico case, this time from MediaPost: Legal Threats Still Loom For Google. Geico pledges to fight on; Google feels vindicated. Interesting commentary on the consumer confusion evidence introduced and how the survey was found lacking in part because Google no longer allows terms that are trademarks to be used in ad copy, except by trademark owners.

Posted by Danny Sullivan at 2:05 PM | Permalink

December 23, 2004

Tips For Search Marketers Following The Google-Geico Ruling

Matt Naegar, one of our legal panelists at SES Chicago and general counsel for search marketing firm IMPAQT, looks at the Google-Geico ruling in Google Versus Geico: What Does It Mean for Search Engine Marketers? from MediaPost.

He warns that it's not anything goes, from a marketer's perspective. In particular, the ruling in one US district might not be followed by judges hearing a case in another district. He also offers some advice on trying to stay out of trouble, until we get clearer rulings.

The Geico case didn't involve marketers, of course -- it was targeted at the search engines as bigger targets (and deeper pockets). No doubt, we'll start to hear of marketers themselves being involved in high-profile cases in the future.

There's also no doubt that the Geico ruling won't be the end of this. Until we get appeals and a number of other cases testing different aspects of trademark law, as they apply to search marketing, the legalities will remain a matter of debate.

Posted by Danny Sullivan at 7:38 PM | Permalink

December 22, 2004

Trademarks and Search Engines

IDG's Juan Carlos Perez offers a lengthy look at trademarks and search engine advertising in the Infoworld article: Trademark owners battle search engines.

Posted by Gary Price at 2:16 PM | Permalink

December 15, 2004

Google Victorious in Trademark Lawsuit with Geico

Google has won the trademark lawsuit with Geico.

From AP: "There is no evidence that that activity alone causes confusion, " Brinkema said, in granting Google's motion for summary judgment on that issue.

However... ...Brinkema said the case would continue to move forward on one remaining issue, whether ads that pop up and actually use Geico in their text violate trademark law. Google contends that its policies expressly forbid advertisers from using trademark names in the text of their ads. The search engine says it does its best to prevent ads that violate the policy from sneaking in, and that the advertisers would be liable for any trademark violation, not Google.

Brinkema said she would halt the trial at this point to put a decision in writing and she encouraged both parties to try and settle the remaining issues.

More coverage from Reuters.

Posted by Gary Price at 12:02 PM | Permalink

December 13, 2004

Report: Geico v. Google Day One

The first day of the Geico v. Google trial is over. The AP's Sam Hananel reports on today's events in the article: Judge Hears Geico, Google Trademark Case.

Posted by Gary Price at 7:24 PM | Permalink

Geico v. Google Previews

The New York Times and Media Post offer overview articles about the Geico v Google trial that begins today in Alexandria, Virginia.

From the NYT article: In a memorandum to support an ultimately unsuccessful motion to dismiss the case, Google said that the problem was a misunderstanding of new technology. "For some reason, rules and propositions that are easily understood in more traditional contexts get hopelessly muddled when applied to the Internet," the memo said. It compared keyword search advertising to print ads in magazines, pointing out that magazines do not infringe on trademarks when they allow one marketer to place an ad near a competitor's.

"That isn't trademark infringement, it's competition," Google said.

But the court will also have to consider whether Google's ad model confuses consumers even for a moment, as Geico argues it does.

I've also posted a recent copy of the case docket here.

Posted by Gary Price at 10:05 AM | Permalink

December 11, 2004

Google Sued Over Google Scholar Name

The legal department at Google is a busy place these days. On Monday, the Geico v. Google trial begins in Virginia.

Today, Searchblog has an item about Google being sued over the Google Scholar name.

The ACS complaint contends that Google's use of the word scholar infringes on ACS’s SciFinder Scholar and Scholar trademarks and constitutes unfair competition.

“The field of scientific research and related services is, of course, open to all,” said Flint Lewis, ACS’s secretary and general counsel, in a statement. “But when someone uses a trademark similar to ours, we have no choice but to take action—to protect the goodwill that we have built over the years and to prevent the likelihood of confusion in the marketplace.

If you would like to read the full text of the complaint the ACS filed with the U.S. District Court in D.C., I've posted a copy of it here.

Posted by Gary Price at 1:21 PM | Permalink

December 9, 2004

Geico v. Google Trial Scheduled to Begin Next Week

The trademark trial is scheduled to get underway on Monday in Alexandria, VA.

This article in National Underwriter has a review of the case up to this point including the Geico settlement with Overture/Yahoo.

Posted by Gary Price at 6:34 PM | Permalink

December 8, 2004

Meta Tag Lawsuit Filed in Florida

Out-Law.com reports about a lawsuit filed in Florida involving meta tags.

From the post: A biopharmaceutical firm that distributes plasma derivatives has sued a rival, alleging that Health Coalition Inc. used the trade marked name “BDI Blood Diagnostics” as a meta tag in its web site source code, according to a report by Law.com.

According to Law.com, the new lawsuit was filed after Blood Diagnostics discovered that search engines were listing Florida-based Health Coalition’s web site in the top 10 of search results for Blood Diagnostics. A forensic examination of the rival distributor’s site ensued, revealing that trade marked terms relating to Blood Diagnostics and four other biopharm companies were contained in the source code of the site.

The complete Law.Com article is here (reg. req, free).

Posted by Gary Price at 3:03 PM | Permalink

MoreGoogle Now LostGoggles

The former MoreGoogle tool, which enhances Google's results with thumbnails and other features, is now called LostGoggles. The site gave up its old domain name to Google after a dispute. For a review of LostGoggles, see Chris Sherman's past article: Visualizing Google Search Results. For the moment, the old domain name is forwarding to the new location.

Posted by Danny Sullivan at 9:40 AM | Permalink

November 29, 2004

MoreGoogle.com Loses Its Domain Name (and other domain name news)

Three items in this roundup.

MoreGoogle, the tool that "enhances" Google results (see SearchDay's: Visualizing Google Search Results), has lost its domain name.

The MoreGoogle blog (hosted by Blogspot), reported on November 15th that Google contacted MoreGoogle.com over, "unathorized use of Google trademark" and the "unauthorized services on moregoogle.com". Yesterday, a blog post announced that the MoreGoogle.com domain name will be shutdown and transferred to Google this week.

Thanks, S.C.

++ It looks like it was nothing more than a company buying an expired domain name but it sure gets you thinking.

Last week, Amazon.com purchased the domain name: AmazonGoogle.com.

In case you're wondering, the domain name: Googleamazon.com, displays artwork by Shawn Capizzi, a New Jersey artist.

+++ I noticed that earlier this month, Yahoo filed complaints with WIPO (World Intellectual Property Organization) to have several domain.names, currently not registered to Yahoo, transferred or removed

The full list of the domains that Yahoo is challenging is here.

Posted by Gary Price at 3:08 AM | Permalink

November 15, 2004

Google Unlikely To Ban Trademark-Linked Ads

John Battelle reports on a rumor out of a WebmasterWorld.com thread that Google might ban affiliates from purchasing ads linked to trademarked terms. But that's not the same thing as banning ALL ads linked to trademarks, as the headline of his blog post suggests: Will Google Ban Trade In Trademarks?

There is a real usability issue in having ads from affiliates showing up. They can confuse searchers who want "official" information from a particular company. Banning affiliates from bidding would help on the ad side, though confusion would still continue to reign in editorial listings.

There's also some legal/hassle advantages to implementing a ban. Big companies who can't or don't control their affiliates could be more easily placated.

But banning affiliates from linking ads to trademarks, if it were to happen, would be a far less drastic move than banning ads linked to trademarks period. For example, a search on Google for samsung i600 brings up these ads among several others:

Samsung i600 Shop Online & Save. Treat Yourself to Great Savings at Target. www.Target.com

Samsung I600 Order a Free Samsung Cell Phone Free Color Flip Phone Special Offer www.Cingular.com

Samsung i600 Smartphone (Verizon) + Extra Accessories Consumer Electronics at eBay www.eBay.com

None of these companies are "affiliates" of Samsung. But all of them supposedly sell the Samsung i600. If they can't purchase that term or mention it in their ads, how are they supposed to advertise their wares? And given that ANY word in the US possibly might be an unregistered trademark from the local level up, how are Google and other search engines supposed to "ban" all of these? What about situations when multiple companies have a trademark claim on a term?

Let's also go back to the particular ads listed above. Interestingly, the page the Target ad leads to shows Samsung products but not the Samsung i600. Bad relevancy on Google's part -- if the product isn't actually being sold, the guidelines about accurate ad text are supposed to prevent it from running.

Let's assuming they DID sell the phones. In that case, it's difficult to see the harm to Samsung by letting what you'd presume to be an authorized reseller say this.

The situation is similar with Cingular. As with Target, the page that comes up doesn't show the Samsung i600! But again assuming it did, it's hard to see the problem with an authorized reseller making mention of the product.

eBay is more tricky (and ironic given eBay trying to get Google to police its own trademarks in the past). Here we have people selling used Samsung i600s or perhaps phones obtained indirectly on eBay. Ban eBay from saying this? Well, if you want to sell your used phone, are you going to be forbidden from actually saying the model of it in an ad? Then how on earth can you describe it?

These are just some of the many complicated issues about linking terms which in some circumstances are also trademarks to ads. Note that bolded "in some circumstances" part. That's because a word is a trademark only in certain particular instances.

Apple. Did I just write a trademark of the Apple computer company, the Apple music company started by the Beatles, the name of Gwyneth Paltrow's daughter or the fruit you can eat? It depends on the context, the look-and-feel of the word and other factors. And when I enter the word into a search engine, is that a trademark action?

I'd be very, very surprised if Google's about to ban the use of any word that might also be a trademark. The company opened up its policy on this front back in April, only reviewing trademark complaints on request over usage within the content of an ad for ads in the US and Canada.

No matter what Google does, court cases will ultimate rule the legality. After all, should Google only let trademark holders link ads to trademarks, you might find people like Playboy's 1981 Playmate Of Year Terri Welles suing for the right to use a trademark to describe her products and services.

A court has already ruled that while Playboy does have a trademark on the term "Playmate," as a Playmate herself, Welles has the right to use the term to describe herself.

FYI, while we wait for the courts, a moot court dealt with the issue during Search Engine Strategies in August. More details in Trademark vs. Search: Do you Soo...gle? from SearchDay and Moot Court: Trademark Protection on Trial from Search Engine Roundtable. And for some other reading on this interesting but complicated topic:

• Search Engine Marketing and Branding
• Search Engines and Trademark Issues
• Affiliate Programs: Moneymakers or Brandbusters?
• Search Engines Turning Trademark Law Upside Down

Postscript: Our forum thread Google & Affiliates - Rumor? has some additional information on the topic, supporting the idea this is a move made to reduce the impact of affiliates, rather than being trademark triggered.

Also, Google's AdWordsAdvisor forum participant in this WebmasterWorld thread stated Google has no current plans to change its affiliate policy.

Posted by Danny Sullivan at 9:58 AM | Permalink

September 23, 2004

Fagoogle Closed

Andy's blogged that Fagoogle, that we wrote about yesterday, has closed in response to an apparent cease-and-desist letter. Fagoogle itself writes that it assumed Google would have no problem with its name because it had emailed Google about plans and got back what looks to be a standard terms and conditions letter. Bad assumption.

Posted by Danny Sullivan at 11:49 AM | Permalink | Comments (0)

September 19, 2004

New York Company Files Suit Against Google

Rescuecom files trademark suit against Google Source: Central New York Business Journal

The Google legal department continues to be a busy place. Another Adwords "related"/trademark law suit was filed in a New York court about a 10 days ago. The suit was filed by RESCUECOM, a computer-repair frachising company.

>From the article, "'By filing this suit, we hope to prevent Google from using the trademarked RESCUECOM name to advertise our competitors' goods and services,' says David Milman, chief executive officer of Rescuecom Corp. 'Their current programming not only infringes upon our trademark status, but also confuses the consumer when competitor advertisements appear when the term 'RESCUECOM' is searched."

I've tracked down the 23 page complaint filed by RESCUECOM with the United States District Court Northern District Of New York. Interesting reading.

Posted by Gary Price at 9:09 PM | Permalink | Comments (0)

September 8, 2004

Moot Court Weighs Search Ads & Trademark Issues

Does Geico's trademark lawsuit against Google have merit? How will the case be argued? What's the likely outcome of the trial? A mock court of trademark experts weighs in with their verdict. Coverage from today's SearchDay: Trademark vs. Search: Do you Soo...gle?

Posted by Danny Sullivan at 4:51 PM | Permalink | Comments (0)

September 2, 2004

Geico Suit Against Overture & Google Can Go Ahead

A case involving ads linked to search terms including the name of insurance company Geico can go to trial, a judge rules. Geico claims trademark infringement by such ads appearing on Google and Overture. Details from News.com: Geico gets green light to sue Google, Overture Over at MediaPost, this related piece looks at whether such ads might actually help brand owners, Analysts: GEICO Ruling May Not Be 'Good News' For Brands.

Posted by Danny Sullivan at 4:24 PM | Permalink | Comments (0)

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